By Budapest Notification No. 261 WIPO confirms the deposit by the Government of the Republic of Peru, on 20 October 2008, of its instrument of accession to the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure. This Treaty will enter into force, with respect to the Republic of Peru, on 20 January 2009.

Peru's accession brings to 71 the number of countries operating under the Budapest Treaty. Costa Rica, the Dominican Republic, El Salvador, Guatemala, Honduras. Mexico and Nicaragua are also contracting parties -- but not any of the Andean Community or Mercosur nations.

MarketWatch reports that Brazil Fast Food Corp. has announced that it has agreed with Grupo de Empresas Doggis (GED) to cross-franchise the Bob's and Doggis brands in Chile and Brazil, respectively. Brazil Fast Food is the second largest fast-food restaurant chain in the country, with 663 points of sale; it trades under brands including Bob's, In Bocca al Lupo Cafe, Pizza Hut and KFC.

Brazil Fast Food will control the Doggis master franchise in Brazil, while GED will control the Bob's master franchise in Chile. Brazil Fast Food expects to develop up to 30 Bob's points of sale in Chile and 40 Doggis points of sale in Brazil in the next five years.

GED is itself a leader in the food service business in Chile. It owns and runs the Doggis hot dog fast food chain. and currently operates through four different brands, with 151 owned and franchised stores.

On 12 September 2008 the Director General of Venezuela's Trade Mark Office announced officially that Andean Community Decision 486 on a Common Industrial Property Regime was no longer applicable in Venezuela and that the only applicable IP legislation is the Industrial Property Law of 1955. Decision 486, approved by Bolivia, Colombia, Ecuador, Peru and Venezuela on 15 September 2000, regulates all aspects of intellectual property, unfair competition, enforcement procedures and control measures. Although Venezuela left the Andean Community in 2006, this announcement was itself unexpected.

IP rights granted under the Andean legislation continue to be valid in compliance with the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights, to which Venezuala is a party. Many issues that are now missing from national IP legislation will be regulated through these international agreements.

* Resolution 178/08, under which the INPI required all patent applicants who filed an application before 1 January 2008 to submit, within a 90-day period, a declaration stating whether the foreign priority which was claimed at the time of filing was granted in the country of origin. The deadline for this period is next week, on 30 October 2008, and is not extendable. In order to comply with this resolution, applicants should submit a list of Argentine patent applications and simply indicate whether foreign priority has been granted. If this is not done by the deadline, the application will be declared abandoned. The idea is that. by making applicants declare their continued interest in prosecuting their pending applications, the current prosecution backlog may be reduced by declaring abandoned those applications for which no declaration is made.

* Resolution 213/08 establishes a procedure whereby the INPI will remove an international priority document established under the Paris Convention from the application file and return it to the owner, reserving the right to request it subsequently if necessary. Likewise, from the moment the resolution comes into force, translations of international priority documents established under the Paris Convention must be filed in digital media (CD-ROM).

The Commission of Constituency and Justice of the House of Representatives in Brazil has approved Bill 3378/2008. This seeks to amend Article 20 of the Civil Code in order to authorize the creation of artistic works of a biographical nature relating to public figures. The bill states that the legislative amendment is necessary to guarantee free speech, as well as the public’s right to access information. Following the approval of the bill by the Commission, it is highly likely that it will be approved by Congress. This should be a considerable boost to Brazilian cultural activities such as films, television programmes and biographical works.

MERCK SHARP & DOME markets, under the brand name EFAVIRENZ, the most used drug in Brazil against HIV/AIDS. In a universe of 200.000 Brazilians infected with this disease in, approximately 80.0000 take this drug.

This drug is present in the Anti HIV/AIDS Cocktail offered without costs to the Brazilian infected patients by means of the renowned Public Program so-called “National Program for Sexually Transmitted Diseases/AIDS”. This Program is led by the Brazilian Ministry of Health.

The Ministry of Health argues that Brazil spent almost USD $ 43.000.000,00 with EFAVIRENZ in the year 2007, paying US$ 1,59 per each pill. The estimated cost of this drug to the “National Program for Sexually Transmitted Diseases/AIDS” amounts to US$ 580,00 per patient per year. Considering these numbers, in 2007, the Brazilian government attempted to reach a satisfactory agreement with MERCK SHARP & DOME, proposing the payment of a price comparable to the one practiced by this company in Thailand, i.e., US$ 0,65 per pill, where the public expenditure with EFAVIRENZ does not surpass USD $ 245,88 per patient.

MERCK SHARP & DOME did not accept the proposal of the Brazilian government to use the same financial terms as those used in Thailand, even after several attempts to come up with an agreement.

Due to this unsatisfactory outcome, the Brazilian government published the Decree no. 6,108 dated of May 4th, 2007. It determined the compulsorily license of EFAVIRENZ patents PI 1100250-6 and 9608839-7, based on the public interest principle. This license was destined only to the public and non-commercial use of the drug, and aimed to attend the aforementioned local HIV/AIDS Program. The time frame of the license was set to be 5 years.

It was further determined that EFAVIRENZ would be manufactured by laboratories of governmental institutions. Since then, Brazil had to import a generic version of EFAVIRENZ from India, at US $ 0,48 per pill, to supply the internal need. This measure was indispensable since the selected public institution to produce the mentioned drug, Farmanguinhos Laboratory at Oswaldo Cruz Foundation (FIOCRUZ), had to acquire the necessary technology to manufacture the EFAVIRENZ from MERCK SHARP & DOME.

Recently, the Ministry of Health announced that Brazil will begin the manufacture of the generic version of the drug by the end of 2008. Farmanguinhos is further waiting for the regulatory approval of the Brazilian Health National Agency (ANVISA). As soon as this approval is issued the industrial production will commence.

According to the Ministry of Health, due to the successful outcome of this initiative, compulsory licenses may be extended to others Anti-HIV drugs, such as TENOFOVIR. This is one of the new targets, since TENOFOVIR is the most expensive drug, representing 15% of the overall costs supported by Brazil in regard to the HID/AIDS Program. It is also currently used by approximately 32.000 infected persons in Brazil.

Will EFAVIRENZ constitute a leading case for the Brazilian Government policy to reduce its costs to fight against HIV/AIDS? Will TENOFOVIR be the next target of the Brazilian Government?

These are questions for which we do not have yet an answer. At least, not a clear and transparent ones.

Nevertheless, it appears that EFAVIRENZ may not be the last compulsory license case, even though this compulsory license has frightened drug companies in investing and initiating Research & Development Programs in Brazil. Let us await for future developments.

Mariz Gestao e Investimentos Limitada sought to register the words MEN'S FITNESS as a trade mark for goods in Class 25. Colombian company Alpina Productos Alimenticios SA opposed, saying that mark was confusingly similar to its earlier FINESSE registered trade mark for goods in Class 29. The Colombian Trade Mark Office dismissed the opposition and allowed the registration. Alpina then filed an action for the cancellation of MEN'S FITNESS before the Colombian Council of State, pleading both likelihood of confusion and that its FINESSE mark was well known.

The Council of State found that Alpina's FINESSE mark was a well-known trade mark under Andean Community Decision 486, confirming that it was thus entitled to a special degree of protection. It then assessed the risk of confusion, holding the marks to be confusingly similar from visual, phonetic and conceptual points of view: if both marks were used concurrently on the market under equal conditions, consumers would be confused as to the origin of the goods.

The Council added that, according to a pre-judicial interpretation issued by the Tribunal of Justice of the Andean Community, confusion is likely to result from the "joint and synchronized impressions created by the marks" especially since, in assessing the likelihood of confusion, their similarities rather than their differences should be taken into account. Taking this into account, MEN'S FITNESS was invalid.

In July of this year the Supreme Court of Venezuela agreed to entertain a reference for a preliminary ruling filed by the Office of the Attorney General on the applicability of Article 258 of the Constitution. This provision establishes that the law must promote alternative means of dispute resolution. Says the Attorney General, Article 258 must be interpreted in line with Article 22 of the Law on Promotion and Protection of Investments, which states that arbitration or other means of dispute resolution will not be used if they are not “expressly” encouraged by an international treaty to which Venezuela is a party. It was also suggested that, even where an international treaty does encourage alternative dispute resolution, the parties to a contract must have “expressly and unequivocally” agreed to submit to arbitration.

Parties to international contracts tend to draft highly specialized and precise dispute resolution clauses, especially in the field of IP, to avoid problems caused by delay and expense in utilising the traditional court process. Also, arbitrators can be appointed who are experts in their fields, while judges may not have the relevant expertise. Other issues are relevant too, such as the need for confidentiality.

If, as is likely, the Supreme Court issues a preliminary ruling that restricts the interpretation of Article 258, parties to international agreements will be precluded from submitting to arbitration any conflict that may arise within the context of an international contract. Such result would have dramatic consequences, as the national courts often fail to provide a final decision in business disputes within a reasonable time. Consequences of such a ruling can be that the number of international contracts involving Venezuelan parties will decrease and thatVenezuela’s reputation as an investor-friendly country will be damaged. Furthermore, if Venezuelan courts refuse to recognize the validity of arbitral awards issued in other countries, arbitral awards issued in Venezuela are likely not to be recognized in other jurisdictions.

Opinion 08048285 of 20 June 2008 of the Colombian Trademark Office amends its practice with regard to the deposit of trade names. Previously, trade names deposited before the coming into force of Andean Pact Decision 486 had to be renewed 10 years after the date of entry into force of the decision (ie by 1 December 2010) while trade names deposited thereafter had to be renewed 10 years after the date of the deposit, under Article 196 of the decision. The Opinion of 20 June removes the requirement to renew the deposit of trade names, and deposits will remain valid indefinitely.

Argentine trade mark law makes no explicit provision for the disclaimer of unregistrable elements of a trade mark. However, Disposition No. 70 of the Argentine National Institute of Industrial Property establishes the formalities required to request a disclaimer, whether voluntarily or in response to an office action. In practice, however, disclaimers are rarely sought or required and many Argentine marks contain descriptive terms. An example is the trade mark BUENACARNE (a contraction of the Spanish words for "good" and "meat"), which was granted earlier this year for meat products in Class 29. The application was filed without any disclaimer but, following a request from the examiner, the applicant disclaimed any claim to the individual words “buena” and “carne”. Although the registration issued, the mark it is weak to the point of nonexistence. It appears therefore that office practice in accepting disclaimers is too lax.

The Brazilian Patent Office (hereinafter only BPO) issued on 25th April 2008 a New Procedure specifically related to the application of Article 32 of the Brazilian Industrial Property Law (Brazilian IP Law).

This New Procedure aims to set an uniform ruling to the previous and different understandings which came into effect with the creation of the Opinion/PROC/DICONS/No.07/2002. This Opinion allowed to change the claims of a patent application even after the date of the patent examination request. In 2008, this Opinion was revoked by MEMO/INPI/DIRPA/No. 072/08, which established some limitations to the changes of the patent application.With the New Procedure, the insertion of any change to the specification, claims, abstract and design (if any) may take place up to the filling of the patent examination request. This time frame limitation does not apply to correction of material errors. Thus, one may request the correction of such errors in all patent applications, at any stage, provided that the correction conforms to the subject matter previously disclosed.Further to that, voluntary modifications or those derived from technical office actions may be accepted insofar as they restrict the patent claims.

This New Procedure has been criticized by academics and scholars, as Article 32 of the Brazilian IP Law has not provided an express rule restricting the alteration of the claims after the examination request. Moreover, the prior IP Law (Law 5,771/72) prohibited any alteration of the claims after the filing patent date. Therefore, the limitation of the New Procedure recalls the existed restriction on the prior law and it is regarded as a set back from the implementation of Article 32 of the Brazilian IP Law.

It has also been argued that the New Procedure does not match properly with those rules contained in the developed countries, such as that of Article 123 of the European Patent Convention.

It is worth mentioning that, although Article 32 of the Brazilian IP Law and the New Procedure permit the modification of the claims, the inclusion of any exceeded claims from those initially requested in the patent filing may be a justifying reason for patent nullity, as provided by in Item III of Article 50 of the Brazilian IP law. This means that changes to the patent application cannot exceed the subject matter disclosed in the original application.

It should be also highlighted that the New Procedure has only been used by the BPO’s examiners on new patent applications, as from 25th April 2008 and those pending for patent examination. Thus, technical opinions already issued regarding the patent examination are not affected in any way.

NIC Argentina, the registry responsible for the .ar country-code top-level domain, launched the registration of internationalized domain names (IDNs) on 8 September 2008. While the Spanish language uses the Roman script, it also uses letters with special accents, such as the letter ñ. This has posed difficulties for computers which cannot process special language characters, such as the letter ‘ñ’ in domain names. The use of IDNs resolves this difficulty for domain names and means that users of .ar domains will be able to use their Spanish regular spellings.

The sunrise period for applications to register IDNs will last until 16 December 2008, with applications being considered from 17 December 2008 to 16 March 2009. NIC Argentina has not yet announced the date from which IDN registrations will be open to the public. In the event of more than one application for the same IDN, the allocation will be decided based on which registrant was first to register its qualifying domain name.